Appeal No. 1997-4374 Page 6
Application No. 08/317,679
cold extrusion and forging processes are “well known in the art”
(answer, page 4). The question presented by the appealed claims,
however, is not whether cold extrusion and forging processes are
known in the art, for it is well established that the mere
existence of individual features in the prior art is not in
itself sufficient basis to render a claimed invention obvious
under § 103. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548, 220 USPQ 193, 199 (Fed. Cir. 1983). Instead, the question
is whether appellant’s combination including the cold extruded
housing would have been obvious under § 103. The fact that it
may be “possible” that Buhl’s housing could be cold extruded as
discussed on page 4 of the answer does not make such a
modification obvious. See In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984) (“The mere fact that the prior
art could be so modified would not have made the modification
obvious unless the prior suggest the desirability of the
modification.”). We find no such suggestion in the prior art
cited by the examiner.
For the foregoing reasons the examiner’s decision
rejecting appealed claims 6 through 11 is reversed.
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